28 Aug INTELLECTUAL PROPERTY (US) – CLOTHING MAKER SEEKS DECLARATION OVER DAVID BOWIE SHOES
As If Magazine (AIM) has brought legal proceedings in New York seeking a declaration that a line of shoes featuring images of David Bowie does not infringe intellectual property rights relating to Bowie.
AIM has a platform called The Collaboratory linking artists from different disciplines to launch products featuring art, design and fashion. One of those is a collaboration with rock photographer Mick Rocks, on a limited edition line of shoes featuring images of David Bowie, said to be owned by the photographer himself, who took the photographs. These images were then modified by Mr Rock using a “ripart” style, altering colour and adding other graphic effects.
Mick Rock has photographed numerous musical artists including Debbie Harry and Snoop Dogg, and took the photograph used in Queen’s Queen II album cover, which inspired the Bohemian Rhapsody video.
A company called Jones/Tintoretto Entertainment Company(JTEC) which is said to own trademarks in ‘David Bowie’, ‘The David Bowie Archive’ and ‘Ziggy Stardust’ complained and sent a cease and desist letter.
Prior to the cease and desist letter, AIM were using Bowie’s name, Ziggy Stardust and parts of his songs in advertising the shoes, but in response to the letter they state that they have stopped doing so. AIM say they have also offered to post a disclaimer on the website making clear that the shoes have no affiliation with the estate of David Bowie or JTEC. However, JTEC were not satisfied with this and continue to demand that AIM stop marketing and selling the shoes.
AIM make clear that now neither the shoes themselves nor the website on which they are sold use the name David Bowie. They are sold as ‘Mick Rock Kicks’. So they say they are not trading off the Bowie name or infringing any trademark, nor would consumers be confused into believing shoes were endorsed by JTEC. They say in the circumstances no claim for ‘false endorsement’ can succeed, and have sought an order for a declaration to the effect that their continuing sale and marketing of the shoes does not infringe JTEC’s trademark or other intellectual property rights.
JTEC has yet to respond to the action, and it remains to be seen what the New York court will decide.
In the context of television production, these types of disputes can arise when real names (for example a celebrity’s name), or registered trade marks, are used in programme titles, the complaint being that use of the name or mark falsely suggests a licence or endorsement by the holder of the name, or trade mark owner.
Such complainants ordinarily threaten both a ‘passing off’ action (the UK’s equivalent to a false endorsement claim) and a trade mark infringement claim. Thankfully for programme-makers, such complaints can normally be fairly easily rebutted principally because the name or mark is being used descriptively and not in a ‘trade mark sense’ i.e. as an indicator of trade origin. Nevertheless, careful thought needs to be given to the use of real names and trade marks in titles, as complaints, when they do come, can be time-consuming and costly to defend.